It seems that a trademark owner cannot file a trademark application without subjecting itself to a frenzied barrage of unwanted solicitations by companies seeking the payment of fees in exchange for various trademark-related services, such as publication in the company’s private database or registry, trademark monitoring services, or recordation of the trademark with customs authorities. In some cases, the solicitations resemble invoices and appear to be issued by a government entity.

The volume of complaints regarding these solicitations has become so loud that the official trademark offices have begun to warn applicants about them.

The United States Patent and Trademark Office (USPTO) has posted a general warning about what “some of the more unscrupulous companies” are doing, such as using names that resemble the USPTO’s name.

The World Intellectual Property Organization (WIPO), which processes international trademark applications pursuant to the Madrid Protocol, has gone one step further by issuing a letter warning of “fraudulent schemes” accompanied by a list of specific companies known to engage in the “unscrupulous practice” of soliciting for fees that are not part of the WIPO registration process.

Given the proliferation of solicitations, many of which resemble official government invoices, what is a trademark owner to do?

HEED THE WARNINGS

Trademark offices throughout the world have posted warnings, some of which name specific companies and provide examples of solicitations that they view as misleading. Private industry groups and individual trademark attorneys have also posted their own warnings, and are sharing information on an ongoing basis. Trademark owners would do well to heed these warnings. The following publicly available resources may be particularly helpful.

Warnings By U.S. Trademark Office

The United States Patent and Trademark Office (USPTO) warns trademark owners on its website about solicitations from “private companies not associated with the United States Patent and Trademark Office” and characterizes the solicitations as “deceptive” and “misleading.” While the warning does not give specific examples, it includes the official correspondence address and email domain for the USPTO to ensure that trademark owners are armed with the information they need when reviewing unsolicited trademark communications.

The USPTO encourages trademark owners to file complaints about trademark solicitations with the Federal Trade Commission, and even offers a link to the FTC’s online complaint website. The USPTO also invites aggrieved trademark owners to contact the USPTO directly, particularly if the recipient of the solicitation thought it was an official USPTO communication or if the recipient mistakenly paid the requested fees.

Warnings by Non-U.S. Patent and Trademark Offices

The World Intellectual Property Organization (WIPO) has taken a particularly active role in trying to stop fee-requesting solicitations, in relation to both trademark and patent applications. Its website warning page features a list of international companies that have sent “invitations to pay fees,” along with links to these companies’ invoices, a document with sample text for attorneys to use to notify applicants and inventors, and a circular letter addressed by WIPO Director General, Francis Gurry, to all PCT Contracting States and Regional Organizations. Its warning page also notes that some invoices are mailed in envelopes that appear to bear the WIPO logo, and gives a list of countries where payment addresses for the invoices tend to be.

It’s easy to understand the confusion. Companies on the WIPO list as of the date of this article include Central Patent & Trademark Database (CPTD), International Register for Trademark & Patent (IRTP), and Globex World Organisation Intellectual Property (WOIP).

The WIPO list concludes with links to the warnings posted on the government websites of other countries, including Australia, Austria, France, Germany, Israel, Japan, Switzerland, and the United Kingdom.

The Office of Harmonization in the Internal Market (OHIM), which processes trademark applications for the European Union, also maintains a robust list of companies that have made “misleading requests for payment for trade mark and design services such as publication, registration or entry in business directories,” together with sample notices.

Warnings by the International Trademark Association

The International Trademark Association (INTA) has issued its own warning on its website stating that “some companies try to trick trademark filers into paying fees for unnecessary services.” Its posting includes a short list of entities reported to have engaged in this type of activity, noting that because these entities constantly change their names and addresses, its list is not comprehensive. Companies on the INTA list as of the date of this article include the official-sounding United States Trademark Protection Agency (of Seattle, Washington) and Trademark Renewal Service (of Washington, DC).

FOLLOW THESE TIPS

If you receive an unsolicited notice regarding your trademark application or registration, follow these steps to avoid paying unnecessary fees:

1. Read the company name and address carefully. All official correspondence from the USPTO will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by email, specifically from the domain “@uspto.gov.” If it isn’t the official PTO name and address, it isn’t official PTO correspondence.

2. Check for a seal. The seals of the USPTO and WIPO are depicted below. While some of the more unscrupulous companies have used logos that resemble these official seals, few if any of them will copy the government seals exactly. If it’s not from the official PTO, then it’s not official trademark correspondence.

3. Be aware that official PTO correspondence will not request additional payment to publish your trademark – this is all part of the trademark process.

5. Alert your Accounting team about the existence of fee-requesting solicitations and give them tips for spotting fraudulent trademark schemes.

LEARN HOW TO RECOGNIZE THE MORE COMMON SOLICITATIONS

Having seen a steep increase in fee-requesting solicitations in recent months, we decided to take a closer look at the solicitations that our clients — and in some cases our law firm directly — receive, to better understand how to help unsuspecting trademark owners avoid the pitfalls of these solicitations.

Marked “IMPORTANT NOTIFICATION REGARDING YOUR FEDERAL TRADEMARK” and set up as an invoice, the double-sided official government-looking correspondence lists all sorts of information related to the owner’s trademark application with the USPTO. The mark, serial number, filing date, class, owner name – it’s all right there. If they have all of this information about my trademark, then the “United States Trademark Registration Office” MUST be affiliated with the USPTO, right? Unfortunately, no. All information included on a trademark application filed with the USPTO is public record. That means that anyone can gather this information and use it to contact the trademark owner, and that appears to be exactly what United States Trademark Registration Office has done.

The name itself, United States Trademark Registration Office, is close enough to the name of the United States Patent and Trademark Office (USPTO) that someone less familiar with USPTO correspondence might be easily deceived. The bold text, the underlining, the ALL CAPS, the arrows, together with the barcodes, make it look like an official document requiring your immediate attention.

Upon closer inspection of the invoice, it states that “THIS IS NOT A BILL. THIS IS A SOLICITATION.” It goes on to say that you aren’t obligated to pay the $375 unless you accept the offer. What is the offer? To record your trademark registration with the U.S. Customs and Border Protection (CBP) as well as several monitoring services.

Of course, if you had any questions about the offer, good luck contacting the United States Trademark Registration Office, as nowhere on the correspondence is there a phone number, email, or website to be found. The only contact information is a business address in LA, which is actually a business center with virtual offices rented by the hour.

More Common Examples

The “United States Trademark Registration Office” is not alone in its attempts to solicit trademark owners. We have also received invoices from companies across the globe offering our clients various services, which usually include at least one of the following: publication in the company’s private database or registry; trademark monitoring services; recordation of the trademark with the U.S. Customs and Border Protection; and renewal of trademark registration (documents only). Here are some examples of the more common solicitations we have seen:

Worldwide Database of Trademarks and Patents (WDTP) offers “a year-long registration of your international trademark application in our internet database of the international trademark applications published in [their website address]”. Why omit the actual URL? Because our antivirus software blocked access to it, indicating that the risk level is ‘dangerous’ and that the site has been verified as a fraud page or threat source. This offer costs the trademark owner $2,327.

Register of International Patents and Trademarks (RIPT) offers to “include your Trademark in our private International Service and Trademark Directory” for $2,738.

Patent Trademark Register – Register of International Patents and Trademarks (yes, looks like the same as above, but it’s actually a different address and website) offers “the registration of your Patent dates in our private Database” for $2,805.50.

CONSIDER SIGNING THE ONLINE PETITION

On February 22, 2012, Erik Pelton, a trademark attorney and former USPTO Trademark Examiner in Arlington, Virginia, started a petition “request[ing] that the USPTO, with assistance from the Trademark Public Advisory Committee (‘TPAC’), renew and strengthen efforts to combat the ongoing epidemic of trademark related scams targeting trademark applicants and registrants.” The petition names several companies that have made such offers, stating that the “solicitations lack any true value, confuse those who receive them, collect money in return for a service of little or no benefit, and damage the integrity of the trademark registration system.” Any trademark owner who has been inconvenienced by unwanted solicitations, or indeed anyone at all, can electronically sign the petition.

CONSIDER A LAWSUIT (NOT FOR THE FAINT OF HEART)

Finally, every now and then someone will go so far as to file a lawsuit. On January 25, 2012, Leason Ellis LLP, an intellectual property firm, filed a Complaint in the Southern District of New York (7:12-cv-00620-ER) against USA Trademark Enterprises, alleging federal unfair competition, false advertising, and a host of state law claims. The Complaint accuses USA Trademark of “unlawful and deceptive acts and practices which result in a likelihood of confusion and deception of the public” (Compl., ¶ 81) and calls the company’s publication, TM Selection, “nothing more than a scam” (Compl., ¶ 35). USA Trademark has not yet answered the Complaint, and the case is currently pending.

Two years ago, WIPO announced that it assisted the Florida Attorney General in the preparation of a civil lawsuit against the Federated Institute for Patent and Trademark Registry (FIPTR) and provided expert testimony at the trial, the outcome of which successfully stopped a “PCT billing scam” directed to patent applicants. The press release noted that, “The judgment in this case is a promising step toward curbing this deceptive practice, and WIPO will continue to cooperate with law‑enforcement authorities in states and countries which make efforts to curtail these practices.” Based on this press release and the information posted elsewhere on WIPO’s website, it appears that WIPO is willing to support government action against trademark companies whose solicitations are misleading.

BUYER BEWARE

As with any other kind of solicitation, use your best judgment and investigate a trademark invoice that is unexpected or appears suspicious. When in doubt, always contact your trademark attorney.

The author would like to thank her firm’s Trademark Administration Manager, Elizabeth Crawford Hella, for her assistance in preparing this article.

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Blog Editors

Julia Huston is well known for achieving outstanding results for clients in high-stakes intellectual property and business litigation cases. She is a Partner in Foley Hoag LLP’s Intellectual Property and Litigation Departments ... More

Blog Authors

Neil Austin’s litigation practice is built on a strong foundation of state and federal trial experience, with particular emphasis on securities, intellectual property and general commercial disputes...More